經通國際智慧產權事務所

Patent FAQ

• The first foreign application was a provisional application and the second foreign application was a non-provisional application. Which foreign application should be claimed as priority for the national application in Taiwan?

  Foreign provisional application refers to the US or Australian provisional application.  This type of application is generally filed by an Applicant for the purpose of occupying an early filing date no matter whether it was filed with a set of claims or not, the Applicant, shall within a stipulated period of time, file a non-provisional application with the set of claims; or, the Applicant shall request for converting a provisional application to a non-provisional application; the addition of new matters is acceptable. In case the Applicant fails to file or request for converting to a non-provisional application within the stipulated period, the provisional application shall deem to be abandoned accordingly.

   

  The scope of invention disclosed in the provisional application is deemed “the first filing”. The scope of invention of non-provisional application already disclosed in the provisional application shall not be deemed “the first filing”; but, the new matters added herein not disclosed in the provisional application shall be deemded “the first filing”. In respect of the patent application to be filed in Taiwan, if the claimed invention was disclosed in the provisional application, it shall claim the provisional application as priority; if the claimed invention was exclusively disclosed in the non-provisional application, it shall claim the non-provisional application as priority.

• Will the invention still be laid-opened even if the applicant has filed a withdrawal of application?

  If the Applicant files a withdrawal of application within 15 months from the application date (if a priority is claimed, the application date shall be the priority date), in principle, the application shall not be laid-opened. On the other hand, if a withdrawal of application is filed after 15 months from the application date (if a priority is claimed, the application date shall be the priority date), the application shall be laid-opened due to the TIPO’s routine arrangement.

• What is the time frame of a substantive examination of an invention patent?

  The examination time frame varies according to different patent classification. The average time of substantive examination is about 21 months.  On the other hand, if the invention patent application complies with the regulations of Accelerated Examination Program (AEP) or Patent Prosecution Highway (PPH) or Prioritized Examination, the applicant can file an application for AEP or PPH.

• Can an applicant withdraw an application after applying for substantive examination?

  No, the applicant cannot withdraw the substantive examination after filing. Once filed, the application will enter the examination process and will be published on the Official Gazette. Considering the expense of examination as well as avoiding third party to apply for substantive examination repeatedly, the substantive examination cannot be withdrawn after filing. If applicant withdraws the application before the TIPO issuing an Office Action, then the applicant can file an application for a refund of substantive examination application fee.

• What is the stipulated time given for responding to an Office Action? Can the applicant apply for extension?

  The stipulated period for responding an Office Action is as below:

  (1) Foreign applications: Within three months.  One extension is allowed. In general, the stipulated period cannot exceed six months in total.

  (2) Domestic applications: Within two months. One extension is allowed.  In general, the stipulated period cannot exceed four months.

• How can an applicant appeal against a preliminary rejection issued for their invention patent application?

  If the applicant would like to appeal the decision, they can file an application for re-examination to TIPO within two months from the date of the receipt of the Decision.

• What is the time frame of a formality examination for an utility model?

  If the application is filed with all the required documents, the Official Decision will take about three to six month to be issued (not include the processing time of the publication and issuance of the patent certificate).

• Can the applicant apply for re-examination in objection of the decision of formal examination for utility model patent?

  As the utility model patent only goes through formality examination; the applicant cannot apply for re-examination in objection of the Decision. However, the applicant can prepare to file pleading to the MOEA within thirty days after receipt of the Decision.

• What is a technical evaluation report for utility model patent?

  Utility model patent only goes through formality examination.  Without substantive examination for the patentability, there is considerable instability and uncertainty in the utility model patent right. If any patentee abuses this uncertain patent right, it may cause considerable damage to the utilization and development of the new technology of a third party.  Anyone can file an application to ask for a technical evaluation report of utility model patent (Patent Law, Article 115 (1)) to know if the subjected utility model patent complies with the patentability requirements. However, the applicant must understand that the report is a non-binding report rather than an administrative disposition. The technical evaluation report for utility model paten is only a reference for the exercise of the patent right and the utilization of the subjected techniques of the said patent.

• Who can apply for technical evaluation report for utility model patent?

  Anyone (include the patentee) can apply to TIPO.

• What does novelty mean for the design patent?

  A design is novel when it does not belong to a part of the prior identical or similar designs.  “Prior art” refers to any prior designs that have been disclosed in printed publication, publicly exploited or publicly known. “Similar designs” refer to designs that will cause confusion to the relevant consumers of the sources from the visual appearance.

  The Examiner examines the novelty issues usually after the examination of the industrial applicability.

• How is the scope of design patent defined?

  The scope of the design patent right is defined based on the drawings as disclosed and with the specifications as a support (Patent Law Article 136 (2)).  Whether there is a specification does not affect the patent scope as claimed and disclosed by the drawings.

• How can one appeal to the Decision of a preliminary examination of a design application?

  If the applicant disagrees with the Decision of the preliminary examination, they can file an application for re-examination to TIPO within two months from the date of receipt of the Decision.

• When can invalidation be filed?

  In respect of the granted invention, utility model and design patent, in principle, anyone may file an invalidation during the validity of a patent right. Besides, the interested party possessing recoverable legal interests of invalidation against a patent right may still file an invalidation even if the patent right has lapsed.

• Can arguments and evidences be late submitted after filing an invalidation?

  Yes. According to Taiwanese Patent Act, Article 73, the arguments and evidences could be late submitted within 1 month upon filing of an invalidation.

• Can an amendment or extra statements be added after filing an invalidation?

  To ensure a definite scope of patent to be invalidated, once the statements are filed, no amendments or addition of extra statements can be made upon filing of an invalidation, but it is acceptable to narrow down the requested claims of the statements. The petitioner’s subsequent amendments and addition of extra statements will not be accepted.

• Is the patent infringer liable for the criminal liability?

  No. As effective from March 31, 2003, the patent infringer shall not be liable for the criminal liability but shall be liable for the civil liability.

• What are the civil liabilities for infringement of patent?

  The patentee may claim for damages when the patent is being infringed. Moreover, the patentee can choose one of the following methods for the calculation of the damages:

   

  1. According to the Civil Code of Taiwan, Article 216, if no method of proof can be produced to prove the damages suffered, a patentee may claim damages based on the difference between the profit earned through patent exploitation after infringement and the profit normally expected through exploitation of the same patent.

   

  2. The profit earned by the infringer as a result of patent infringement

   

  3. On the basis of reasonable royalties that may be collected from exploiting the invention patent being licensed.

   

  Where the infringement is found to be intentionally committed, the court may, upon request and on the basis of the severity of the infringement, award the damages greater than the loss suffered but not exceeding three (3) times of the proven loss.